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Creating, Protecting and Defending Brand Equity - Part 3

In the final of my three-part post series about how to protect your trademark against misuse, I will focus on proactive searching and policing and the benefits these can provide to brand owners.

Proactive searching and policing of your brand is a prudent step in making sure your name is protectable. This is an advisable first step in naming a product or service. Several patent and trademark offices around the world have free websites for screening active trademarks, and professional search firms allow you to screen upwards of 50 countries and domain extensions around the world. Professional search firms can also conduct more detailed searches for you, including brands appearing in common law, websites, domain names and company names. The search firm will be skilled in searching not only the trademark registrations within the geographic locations you are interested in, they are also well versed in searching common law use of the name including website, company names, domain names etc. They maintain proprietary collections of common law databases and search algorithms that allow them to be extremely proficient in searching for “confusingly similar” names that may not be uncovered by a lay person who conducts trademark research on their own. These searches will let you know if a valid trademark exists somewhere, filed or otherwise, that could pose a problem to your domain or brand name. Searches can be tailored to your budget and are almost always cheaper than facing a legal challenge later on.

Once you establish your brand, you can monitor or “watch” trademark and domain filings around the world to make sure no one files something too similar to your own trademark or brand. This can allow you to catch a problem before it becomes too big, or creates a challenge to your own brand. Most countries, including the U.S., will publish all filed trademark applications on a regular basis in a publication called the Official Gazette, allowing existing brand holders to identify and challenge new brands if they feel they infringe on theirs prior to the PTO granting rights (each country maintains their policy and procedure in this regard). Watching services can monitor these gazettes on a global basis, alerting trademark owners of potentially infringing trademark applications.

Another important step is to manage your domain portfolio, working to register and maintain your domain names. It can be easy to lose track of your domains and actually lose the name when the renewal is due. Another common challenge is to maintain your dotcom, but have competitors or challengers lay claim to similar ccTLDs (i.e. you may register blammmo.com, but find that another individual is trading on your good name at blammmo.cn).

As mentioned earlier, the best way to protect a trademark is to start out ensuring that your mark is clear by conducting a trademark search. This is the most reliable way to ensure you will not receive a cease and desist letter after you’ve invested in the launch of your product or service. As in so many areas, an ounce of prevention is worth a pound of cure.

Next, put the mark to use in a way that can be proven as common law use and register it with the PTO. The registration and use of a domain name is clearly a great step to show that usage. As long as you register your domain in good faith, and maintain the site, the registration will offer a level of common law rights in the U.S.

Related Links:
Creating, Protecting and Defending Brand Equity - Part 1
Creating, Protecting and Defending Brand Equity - Part 2

By Joshua Braunstein, General Manager, CT Corsearch

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